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[elatimFUZZ]

We received a decision from the BPAI in which some rejections were "sustained," but some rejections were "not sustained."  However, the decision does not allow any claims nor does it re-open prosecution.  What are our options?  Do we have to file an RCE to prosecute the claims for which the rejections are "not sustained?"

[Robert K S]

The latter.

The Board generally does not allow claims.

[Robert K S]

Theoretically, the examiner gets as many whacks at your application as he or she wants.  Conceivably, the next action you get in the case will be a new non-final rejection of all pending claims based on new grounds of rejection.  In practice, however, examiners usually allow claims that the Board has reversed rejections on (or give you the chance to amend them into independent form if they were dependent claims for which the independent claim they were dependent on had its rejection affirmed by the Board).